Gibson Owen was formerly a senior associate at the law firm Clinch Neville Long and was a volunteer lawyer for Arts Law in 2005. Troy McGregor was a law student volunteer at Arts Law in 2005 as part of the University of Sydney external placement program.
What's in a name? The short answer to this question made famous by William Shakespeare in Romeo and Juliet is – a lot. Names are crucial to many arts businesses because they act as a signpost to potential customers. The names of artists, products, films, songs and characters indicate a connection with a specific person or company and in turn represent their accumulated reputation and good will.
This article provides an introduction to the protection of names through the use of trade marks.
What is a trade mark?
Trade marks are usually the key words, images or logos that people associate with you or your company that you want to ensure that no one else can use. Some well known trade marks include: Telstra, Universal Studios, Gucci, Ford, Ikea, Sony, Superman, BP, INXS and McDonalds golden arches.
A trade mark is not limited to a single word, and may includes a phrase, letter, logo (also known as a device), shape, color, scent or sound or a combination of any of these. However, the general presumption is that colour or shape alone will not generally function as a trade mark to distinguish your goods and services (note that colour or shape as part of a logo won't face the same problem). As a general rule shape will be considered functional or inherently part of the product, and colour is presumed to be for aesthetic purposes.
A trade mark if often indicated by the symbol ™ or ® if the trademark has been registered. Registration is a formal process managed by IP Australia, and requires the submission of an application (which is then assessed to determine if the mark is suitable to be registered) and the payment of a fee. While anyone can use ™ to indicate their intended use of a trade mark, it is an offence to use the ® symbol if your mark is not registered.
Are trade marks important?
Trade marks represent your commercial identity and can also be important to artists, for example, when starting a business, choosing a band name or logo, the titles of a book or film or deciding what logos you can incorporate into your artwork.
Trade marks or branding are employed by individuals, businesses, institutions and governments to distinguish their products and services from those of their competitors. This ability to distinguish is know as the 'badge of origin' function because it minimises confusion and gives consumers an indication of the quality and source of what they are purchasing so that they can easily identify that trader next time they wish to purchase or avoid them all together. If the mark you intend to use is incapable of distinguishing your goods or services, it won't be suitable for registration. As an additional requirement for registration is that the mark is used or intended to be used in the course of trade and commerce, a genuine failure to intend to use or a failure to actually use the registered mark for a continuous 3 year period will risk deregistration.
Registration is the best way to protect your mark because it provides a strong basis for legal action and allows a more rapid response to infringement. Once registered it allows the owner to use the mark (in the classes of goods registered) and prevent others from confusing consumers by using the same or similar mark in relation to similar goods and services. Unregistered trademarks are much harder to protect and require an owner to establish, among other things, that they have a sufficient reputation under that mark.
This is a very important for musicians and bands that commence public performances without prior registration of their name as a trade mark as they risk losing the right to use that name if another band, singer, producer, record label registers that name in Australia. This may result in the loss of the ability to trade on the reputation they have built up under that unregistered name.
Although the trademark registration process may be considered expensive, it can be worthwhile to ensure you best protect your business assets and reputation. In addition to have to later change your name could be very difficult to manage.
What is a trade mark class?
When you apply to register your mark you are required to nominate the trade classes you intend to trade within. There are 45 different classes of goods and services which areintended to cover all types of trade, commerce and services. Below is a sample of the classes which are likely to be relevant to artists and creators:
Trade mark classes
Class 9 – includes recording apparatus such as CDs, tapes, records
Class 15 – musical instruments
Class 16 – books, pictures, sheet music, artist’s materials, paint brushes, stationery
Class 23 – yarns and threads for textile use
Class 25 – clothing, headwear, headgear
Class 28 – includes some games and Christmas tree decorations
Class 42 – entertainment, educational and cultural services
Choosing your trade mark
There are many words, shapes, colours and images which are incapable of being registered as a trademark. The most common problem arises when you choose a mark that is the same or similar to one that has already been registered. However, this can be avoided by searching the online trade mark registry (www.ipaustralia.gov.au). For more information of conducting searches see the Arts Law information sheet titled 'Business names, Trade Marks and Domain Names'.
A common problem is that a mark seeking registration will not be sufficiently distinctive if it represents a common or general description of the particular type of goods and services, or when the mark uses a geographic name such as Parramatta which other traders may naturally wish to use if they come from that area. For example, it is likely to be impossible to register the following:
- 'Sydney' Jazz Band;
- 'The Basement' Rock Band; and
- 'Music' Band;.
The first is objectionable because of the geographic name and the second because the name contains the name of a well-known business. The third would be unregisterable because 'music' is itself highly descriptive of the product itself, in addition musicians generally may wish to use the words to describe their own products. The best advice is to be utterly inventive by selecting a made-up word (e.g. XEROX) or to use compound words (e.g. Powderfinger).
When trade marking a name we recommend that you identify a unique word that is not widely used in the relevant industry. Not only does this ensure you will be identified as the certain brand, but it also ensures you do not infringe anyone else's rights in a name. There are, for example, laws against one company passing itself off, or representing itself as another company or as associated in anyway with another company. For more information on these actions please see the Arts Law information sheet, available online titled 'Business names, Trade Marks and Domain Names'.
Under the Trade Practices Act, there are further sanctions against traders using a trade name that is deceptively similar to another trade name irrespective of whether either or both of the marks are registered.
What happens if people want to register similar names?
There is an opportunity during the trademark registration process for other traders to oppose your application, particularly if it bears similarity to their own registered mark and is likely to deceive or confuse consumers.
Similarity may result where marks look or sound the same (e.g. Solaroid vs. Polaroid). There is also a greater chance of deception or confusion occurring when similar marks relate to the same or similar class of goods or services. A similarity in class might arise between carpets and rugs on the one hand, and textile machinery on the other. A similar mark in these classes may still be misleading, particularly where similar products are likely to be sold to the same customers in the same type of retail outlets (but note the same mark in relation to totally different products is unlikely to cause confusion e.g. Gibson guitar vs. Gibson paints).
In addition an Australian band seeking to register a name that is the same or similar to an international band that has a reputation in Australia may face further difficulties. Despite having not registered a formal trademark, it is likely that a reputable international band would be able to prevent the registration of the name as a mark in Australia by arguing that to do so would confuse consumers, as they have the sufficient reputation to establish a common law mark.
Trade marks and copyright?
Where a trade mark is made up of or includes a logo (device) of some artistic complexity then the trade mark may also be protected by copyright law. In these circumstances the owner of the trade mark may not necessarily be the owner of the copyright. Usually a designer of the artwork or logo, which later becomes a trademark, has provided the trade mark owner with a license to use the artistic logo for its intended purpose. Depending on how far the agreement between the designer and potential trade mark owner goes, it may be that a trademark owner could not use the artwork for an unrelated purpose without additional consent and licensing from the designer, copyright owner.